Thailand has recently undergone a significant and welcome change in the landscape of intellectual property. Indeed, the government has decided to bring into force an amendment on trademarks, “Act B. E. 2559,” effective as of July 28th, 2016. The Act will reform current procedures through a series of legal amendments.
The amendments represent Thailand’s first step towards international standardisation of its protection of intellectual property rights. Whilst the current challenge is to construct a legal infrastructure Thailand would then be able to gradually build up towards accession to the Madrid Protocol. However, even if the amendment introduces a number of developments into Thailand’s intellectual property legislation, more decrees will have to be adopted in order to complete this core structure.
A reform of the trademark registration process
A first step in bringing the legislation closer in line with the Madrid Protocol was done through the drafting of a law, in force since July 28th, 2016 allowing for multi-class trademark registration. Until then, one could only register trademarks in one class/category. The reform mainly simplifies the process of issuing trademarks, allowing for the protection of products and services of different categories under the same trademark.
Before the trademark reform, a prior application would result in the automatic cancellation of other applicants’ rights to register a similar or identical trademark even if the application was still under review and its registration still in progress. As of July 28th, 2016, subsequent applications will simply be suspended during the review period of the first application.
Furthermore, trademark holders are no longer allowed to apply for the association of several similar trademarks.
Strengthened trademark protection
- Change in timeframes
On one hand, the amendment of the law on Thailand’s trademarks will bring changes to the current timeframes. The response time to an objection or an opposition made to Thailand’s Trademarks Office has now been reduced from 90 to 60 days.
On the other hand, the time limit to pay the registration fee is extended from 30 to 60 days after the registration notice date. It is also possible to request for an extension of the deadline.
A grace period of 6 months after the expiry date has also been added. During that time, trademark holders will be authorized to renew their trademark applications in exchange for the payment of a higher rate .
- Registration of sound marks
One of the amendments that has gotten a lot of media coverage is the possibility of registering sound marks via the Thailand Trademark Office. This protection has been in force in other countries for some time. In France for instance, audible signs can give rise to a valid trademark pursuant to the , if the signs are represented by musical scores or sonograms.
Thailand has now decided to admit that goods and services can be distinguished by audible signs. Such sound marks are a natural complement to the category of protected trademarks.
However, in Europe, a judgement of the Court of Justice of the European Union dated November 27, 2003 (CJEU November 27, 2003, n°C-283/01) has further highlighted the protection of sound marks. The European judges ruled that only a transcription constituting a musical score complies with the requirements so that the “graphic representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.” Therefore, we will have to wait for developments in Thailand’s caselaw to effectively define the framework for this new addition to the field of distinctive marks.
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